Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HYTERA COMMUNICATIONS CO. LTD.,
Appellant
v.
MOTOROLA SOLUTIONS, INC.,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-2126
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00128.
______________________
Decided: January 19, 2021
______________________
TODD ROBERTS TUCKER, Calfee, Halter & Griswold
LLP, Cleveland, OH, for appellant. Also represented by
K YLE TIMOTHY D EIGHAN , JOSHUA FRIEDMAN , Y IZHOU LIU ,
M ARK M C D OUGALL, JOSHUA M ICHAEL RYLAND .
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HYTERA COMMUNICATIONS CO . LTD. v. MOTOROLA SOLUTIONS ,
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JOHN C. O'Q UINN , Kirkland & Ellis LLP, Washington,
DC, for appellee. Also represented by HANNAH LAUREN
BEDARD , JASON M. WILCOX; M ICHAEL W. D E VRIES ,
BENJAMIN A. H ERBERT, Los Angeles, CA; AKSHAY S.
D EORAS , New York, NY; ADAM R. A LPER, San Francisco,
CA.
M ONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. K RAUSE,
FARHEENA Y ASMEEN RASHEED .
______________________
Before N EWMAN , LOURIE, and H UGHES , Circuit Judges.
H UGHES , Circuit Judge.
Hytera Communications Co. Ltd. appeals from the fi-
nal written decision of the Patent Trial and Appeal Board
holding that claims 1, 4–9, 12–15, and 18–19 of U.S. Patent
No. 8,116,284 are not unpatentable. Hytera Commc’ns
Corp. Ltd. v. Motorola Sols., Inc., No. IPR2018-00128, 2019
WL 2062285 (P.T.A.B. May 9, 2019) (Decision). For the fol-
lowing reasons, we affirm.
I
Motorola Solutions, Inc. owns U.S. Patent No.
8,116,284 (the ’284 patent), which is directed to methods by
which communication devices efficiently select timeslots in
a time division multiple access (TDMA) wireless communi-
cation system. TDMA refers to a method of dividing a sin-
gle frequency band into multiple channels by allocating
regularly recurring periods of time or “timeslots.” Radios in
the communication system are assigned a unique timeslot,
and each radio transmits during its assigned timeslot. This
allows two radios to simultaneously transmit on the same
frequency.
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Communications systems, including TDMA systems,
typically pool available channels using “trunking” meth-
ods. Some such prior art trunking methods used a common
controller—a device that monitors and assigns channels to
radios—to allocate trunked channels. ’284 patent 1:49–57.
Other prior art systems did not use a common controller.
For example, the European Telecommunications Standard
Institute’s Digital Mobile Radio system teaches that a ra-
dio can have an assigned timeslot and communicate di-
rectly with another radio. J.A. 2077. However, if the radio’s
assigned timeslot is in use, that radio must wait for the
timeslot to become available. Id.
The ’284 patent claims a novel and more efficient
method of selecting timeslots that neither relies on a com-
mon controller nor limits a radio to its assigned timeslot,
and accordingly resolves inefficiencies inherent in reliance
on those methods. Instead, the ’284 patent discloses a
method—and corresponding devices and systems—in
which each radio independently, but concurrently,
searches for and temporarily selects an available timeslot
if its assigned timeslot is occupied. See ’284 patent 5:40–44.
Hytera petitioned for inter partes review of claims 1,
4–9, 12–15, and 18–19 of the ’284 patent. Claim 1 of
Motorola’s ’284 patent is representative:
1. A method for temporarily selecting a time
division multiple access (TDMA) timeslot by a radio
communication device to thereby allow the radio
communication device to communicate, through at
least one repeater station, with a talkgroup of other
radio communication devices, the method compris-
ing:
the radio communication device having an as-
signed default timeslot for communicating
with the talkgroup;
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the radio communication device determining if
the default timeslot is available for the radio
communication device to communicate with
the talkgroup;
the radio communication device searching for an
available timeslot when the default timeslot
is unavailable;
the radio communication device temporarily se-
lecting the available timeslot as a temporary
selected group timeslot for the talkgroup; and
the radio communication device re-selecting the
default timeslot for communicating with the
talkgroup when the default timeslot becomes
available.
’284 patent 6:20–39. Hytera contended that the challenged
claims were unpatentable: 1) as anticipated by U.S. Patent
No. 6,529,740 (Ganucheau); 2) as anticipated by U.S. Pa-
tent No. 8,279,991 (Wiatrowski); and 3) as obvious over
U.S. Patent No. 6,374,115 (Barnes) in light of U.S. Patent
No. 5,790,527 (Janky).
Ganucheau describes a group radio communications
system using satellites that act as repeaters, ground ra-
dios, and a group controller. The group controller produces
and periodically updates a list of channels based on the lo-
cations of the satellites. Using that list, each ground radio
determines whether its current channel is acceptable and,
if it is not, it determines whether another channel on a dif-
ferent satellite will provide better signal quality. Decision
at *4–5.
Wiatrowski discloses methods for synchronizing radios
to a “desired timeslot” in a TDMA communication system.
Id. at *8. Each radio in this system “selects a synchroniza-
tion pattern associated with the desired timeslot that is
mutually exclusive from synchronization patterns associ-
ated with other timeslots on the same frequency.” Id. By
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using an undesired timeslot as a reference, the method de-
scribed in Wiatrowski ensures that the radio can transmit
in the desired timeslot without interfering with transmis-
sions in other timeslots. Id.; Wiatrowski 12:34–39.
Barnes teaches a frequency division multiple access
system (FDMA) communication system in which each radio
is assigned a home channel which occupies an entire fre-
quency. Barnes 1:61–63, 8:22–25. When the home channel
is unavailable, the radios will temporarily communicate on
other frequencies. Decision at *10.
Janky discloses TDMA, identifies certain advantages
of TDMA over FDMA, and discloses methods which add
TDMA capabilities to existing FDMA systems. Id.
After instituting inter partes review on all three
grounds, the Board concluded that Hytera had failed to
show by a preponderance of the evidence that the chal-
lenged claims were unpatentable. Id. at *1. This appeal fol-
lowed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
II
Hytera raises four principal arguments on appeal
which we address in turn.
A
Hytera first argues that the Board improperly applied
a new construction of the claim term “default timeslot” in
concluding that the claims of the ’284 patent were not an-
ticipated by Ganucheau. Anticipation is a factual finding
which we review for substantial evidence. HP Inc. v. MPHJ
Tech. Invs., LLC, 817 F.3d 1339, 1343 (Fed. Cir. 2016). “A
finding is supported by substantial evidence if a reasonable
mind might accept the evidence to support the finding.”
In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017).
We review the Board’s claim constructions de novo and any
underlying factual findings for substantial evidence. In re
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Cuozzo Speed Techs, LLC, 793 F.3d 1268, 1281 (Fed. Cir.
2015).
Hytera argues that the Board originally construed the
claim term “default timeslot” as “including a timeslot that
changes based on time, location, or other criteria” but then
inappropriately narrowed that construction during its an-
ticipation analysis to require instead “that default timeslot
remain unchanged throughout the method.” Appellant’s
Br. 39 (emphasis in original). Because the Board found that
Ganucheau did not teach switching back to the default
timeslot when the default timeslot becomes available, De-
cision at *5–6, Hytera’s theory of anticipation by Ga-
nucheau required that claim 1 of the ’284 patent be
construed such that the “default timeslot” could change
during the performance of the method. In other words, Hyt-
era desired a construction of claim 1 in which “the default
timeslot” that is re-selected in the final “re-selecting” step
of the method could be a different timeslot from the original
“default timeslot” recited in the first step of the method.
’284 patent 6:26–39 (emphasis added).
But, contrary to Hytera’s assertions, the Board never
construed claim 1 in this fashion. Indeed, the construction
Hytera urges would defy logic and basic rules of grammar.
The “re-selecting” step of claim 1 uses the definite article
“the” to refer to “default timeslot.” “Subsequent use of the
definite articles ‘the’ or ‘said’ in a claim refers back to the
same term recited earlier in the claim.” Wi-Lan, Inc. v. Ap-
ple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016). The only ante-
cedent basis for “the default timeslot” in the final, re-
selecting step of claim 1 is the “assigned default timeslot”
recited in the first step of the method. Even the testimony
of Hytera’s own expert does not support the construction
Hytera asserts. J.A. 1863–64 (describing the re-selecting
step as “reselecting the default that’s going back to what
was at least in [the first step]”). We agree with the Board’s
construction of claim 1 such that the re-selecting step “re-
quire[s] that the same timeslot be selected again,” Decision
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at *6, and conclude that the Board applied that construc-
tion consistently in its anticipation analysis.
Hytera additionally argues that the Board erred be-
cause it failed to credit the evidence provided by Hytera’s
expert in a supplemental report. Appellant’s Br. 49–50. But
the substantial evidence standard does not allow us to re-
weigh the evidence. In re Warsaw Orthopedic, Inc., 832
F.3d 1327, 1333 (Fed. Cir. 2016). The Board considered and
discussed at length the teachings of Ganucheau, the testi-
mony of Hytera’s expert, and the testimony of Motorola’s
expert, and found that Motorola’s expert “articulates the
more compelling position, namely, that the re-selecting
step cannot be met by selecting a new, different timeslot”
as taught in Ganucheau. Decision at *6 (internal quota-
tions omitted). The Board’s finding that the claims of the
’284 patent were not anticipated by Ganucheau was sup-
ported by substantial evidence.
B
Hytera’s second argument is that the Board erred in
finding that the claims of the ’284 patent were not antici-
pated by Wiatrowski. As an initial matter, we hold that the
Board’s findings regarding the teachings of Wiatrowski
were supported by substantial evidence. The Board found
that Wiatrowski does not teach transmitting on an alter-
nate or “undesired” timeslot as required by the challenged
claims. Decision at *9. In support of this finding, the Board
credited the testimony of Motorola’s expert, which it found
aligned with its own independent review of Wiatrowski. Id.
Hytera further argues that the Board erred by failing
to consider its argument, raised for the first time in a reply
brief, that the claims of the ’284 patent were anticipated by
U.S. Patent Application No. 12/331,180 (the ’180 applica-
tion), which Wiatrowski incorporates by reference. While
the Board noted that Hytera’s belated presentation of this
theory of invalidity was improper, the Board nonetheless
“reviewed the cited disclosure of the ’180 application.” Id.
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The Board found that the ’180 application did not antici-
pate the claims of the ’284 patent because it did not teach
temporarily selecting an alternate timeslot before return-
ing to the default timeslot. Id. Hytera’s argument regard-
ing the Board’s application of waiver is thus without merit.
C
Hytera next challenges the Board’s conclusion that the
challenged claims would not have been obvious over a com-
bination of Barnes and Janky because a skilled artisan
would not have been motivated to combine the references.
While the Board’s ultimate determination of obviousness is
a legal conclusion which we review de novo, we review the
Board’s underlying factual findings for substantial evi-
dence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
Such factual findings include the teachings of prior art and
whether a person of ordinary skill in the art would have
been motivated to combine prior art references. In re Ethi-
con, 844 F.3d at 1349.
Hytera’s arguments on appeal, however, again do not
address the substantial evidence standard. Hytera con-
cedes that—assuming that Barnes teaches all elements of
the challenged claims except for performing them on a
TDMA system, a question which the Board did not reach—
Barnes does not teach performing the claimed method on a
TDMA system and instead teaches a method of selecting
frequencies on an FDMA system. Appellant’s Br. 34. Hyt-
era therefore relied on combination with Janky to teach
performing the method disclosed in Barnes on a TDMA sys-
tem. Id.; J.A. 120–22. The Board analyzed Janky and con-
sidered expert testimony from both Hytera and Motorola
on whether Janky taught performing the FDMA-based
techniques disclosed in Barnes on a TDMA system and con-
cluded that it did not. Decision at *10–11. In support of that
conclusion, the Board explained the significance of the dis-
tinction between adding TDMA to an FDMA system and
converting an FDMA system to TDMA and noted that
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Janky taught only the former. Id. at *10. The Board also
cited the testimony of Motorola’s expert that an artisan
would not have been motivated to combine Barnes with
Janky for the sole reason Hytera asserted—to improve
spectral efficiency—because “there were many ways to add
efficiency and capacity,” such as by adding additional
FDMA channels. Id. at *11. The Board’s finding that an
artisan would not have been motivated to combine Barnes
and Janky was thus supported by substantial evidence.
Hytera nonetheless argues that the Board erred be-
cause its expert testified that an artisan would know that
the methods disclosed in the ’284 patent could operate in
the same manner on either a TDMA or FDMA system. Ap-
pellant’s Br. 35–36. But neither Hytera nor Hytera’s expert
provided evidence of such understanding from “before the
effective filing date of the claimed invention.” 35 U.S.C.
§ 103; InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d
1327, 1353–54 (Fed. Cir. 2014). The Board correctly con-
cluded that this reasoning was based on hindsight
knowledge of the patented invention itself, Decision at *11,
and we affirm.
D
Finally, because we agree with the Board’s conclusion
that the claims of the ’284 patent would not have been ob-
vious, we do not reach Hytera’s challenges to various as-
pects of the Board’s analysis of secondary considerations of
non-obviousness. Hamilton Beach Brands, Inc. v. f’real
Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018).
III
We have considered Hytera’s remaining arguments
and find them unpersuasive. The Board’s final written de-
cision is affirmed.
AFFIRMED
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